Deceptive Trade Marks The Bread-and-Butter Facts

One of the requirements for registering a trade mark, either in Ireland or in the EU, is that the application cannot be made in bad faith nor can it be of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

Regardless of one’s proficiency in Spanish, a cursory glance at the above mark that was registered in 2014 for use on a range of foodstuffs, including meat, fish, dairy and vegetables, would most likely, given its name, phonetic features, colouring which evoked Ireland’s national colours and the symbolism of a Celtic knot, suggested its products came from Ireland. Given that ‘La Irlandesa’ means ‘Of the Irish’ or ‘The Irishwoman’ in Spanish, the food-buying Spanish (or Spanish-speaking) public would therefore be likely (understandably) to be deceived into thinking that the origin of the products to which the trade mark was attached was Ireland, when in fact they were not.

The fact that the owner of the trade mark offered goods not of Irish origin demonstrated bad faith and deception of the public and Ornua, the owner of the Kerrygold trade mark, made a successful invalidity application.

This decision was appealed by the Spanish firm, but the EU General Court dismissed the appeal. When filing the EUTM application in August 2013, the applicant intended unfairly to transfer the image of Irish dairy products to goods not having that origin and to take advantage of a former business relationship with Ornua. The filing of the mark was thus contrary to honest commercial and business practices.

If you have any queries about your trade mark, or a geographical indication that you would like to enquire about affixing to your product, Briffa can help you assess the best way forward. To book a free consultation, with one of our specialist IP lawyers, contact us at info@briffa.com.